The matter at hand

The French company Delta Lingerie filed applications for registration of several EU figurative marks containing the word element 'darjeeling' for, inter alia, women's undergarments. The Tea Board, an Indian body empowered to administer the production of tea, filed a notice of opposition to the registration of those marks on the basis of, inter alia, the earlier EU collective word mark DARJEELING, registered for tea. This mark is a collective mark consisting of an indication ‘which may serve, in trade, to designate the geographical origin of the goods or services’ within the meaning of Article 66(2) of Trade Mark Regulation 207/2009Council Regulation [EC] No 207/2009 of 26 February 2009 on the Community trade mark.

As did the Opposition Division and the Second Board of Appeal, the General Court ruled out the existence of a likelihood of confusion in view of the lack of similarity between the goods. It did, however, find that, in view of the exceptionally strong reputation of the earlier marks, the Board of Appeal was wrong to exclude the existence of a risk of advantage resulting from the use without due cause of the trade marks applied for within the meaning of Article 8(5) of Trade Mark Regulation 207/2009Council Regulation [EC] No 207/2009 of 26 February 2009 on the Community trade mark. Both parties appealed this decision to the ECJ.

The judgment of the ECJ

The Tea Board argued the General Court erred in law by concluding that the essential function of a collective mark consisting of signs or indications which may serve, in trade, to designate the ‘geographical origin of the goods or services’ within the meaning of Article 66(2) of Trade Mark Regulation 207/2009Council Regulation [EC] No 207/2009 of 26 February 2009 on the Community trade mark is to serve as an indication of commercial origin. According to The Tea Board, the essential function of such a mark is to guarantee to consumers the geographical origin of goods. Consequently, the fact that the public might believe that the goods and services covered by the signs at issue have the same geographical origin should be sufficient to establish their similarity or identity and to conclude that there is a likelihood of confusion.

The ECJ rejects this line of reasoning, considering that it is clear from the very wording of Article 66(2) that EU collective marks consisting of indications of geographical origin constitute EU collective marks within the meaning of paragraph 1 of that article, according to which only trade marks that are capable of distinguishing the goods or services of the members of the association which is the proprietor of the trade mark may constitute EU collective marks (paragraph 50). “While the Court (…) has already held that a trade mark may fulfil other functions than that of indicating origin which are equally worthy of protection against infringement by third parties, such as that of guaranteeing the quality of the goods or services which it designates, or those of communication, investment or advertising, it has nonetheless always emphasised that the essential function of a mark remains that of indicating origin” (paragraph 53).

The ECJ notes that, other than The Tea Board submitted, the judgment in Budějovický Budvar (C‑96/09 P) - in which it held that the essential function of a geographical indication is to guarantee to consumers the geographical origin of the goods - is irrelevant in this regard, as that judgment did not relate to collective marks within the meaning of Article 66(2), but to geographical indications protected on the basis of the Lisbon AgreementLisbon Agreement for the Protection of Appellations of Origin and their International Registration of October 31, 1958, as revised at Stockholm on July 14,  1967, and as amended on September 28, 1979 for the Protection of Appellations of Origin and their International Registration of 31 October 1958 (paragraph 55). The same applies to the comparison made by The Tea Board with geographical indications protected under Regulation No 1151/2012 and Article 22 of the TRIPS Agreement. “It suffices, in that regard, to note that such geographical indications, on the one hand, and EU collective marks consisting of signs or indications which may serve, in trade, to designate the geographical origin of goods and services, on the other hand, are signs which are governed by distinct legal regimes and pursue different aims.” (paragraph 62).

It follows that the General Court did not err in law when it held that, where the signs at issue are, on the one hand, collective marks and, on the other hand, individual marks, the possibility that the public might believe that the goods and services covered by the signs at issue have the same geographical origin, cannot constitute a relevant criterion for establishing their identity or similarity or to conclude that there is a likelihood of confusion.

In the cross-appeal, Delta Lingerie argued that the General Court contradicted itself when it held, on the one hand, that the consumer of the product covered by the earlier trade marks, in this case tea, would not be led to believe that the goods and services covered by the trade marks applied for by Delta Lingerie originate from the Darjeeling region, while considering, on the other hand, that the consumer of the goods and services covered by the trade marks applied for by Delta Lingerie could be attracted by the values and positive qualities connected with that region. The ECJ rejects this argument, explaining that the fact that consumers of tea will not be led to believe that the lingerie sold by Delta Lingerie originate from the Darjeeling region, does mean that there is no risk of detriment being caused to the distinctive character of the earlier marks, but does not necessarily mean that there is no risk that unfair advantage is taken from the distinctive character or repute thereof. “As the Advocate General also noted (…), the assessment of whether those different types of risks exist is subject to an examination, the criteria of which do not necessarily overlap. In that regard (…) the existence of a risk that the injuries consisting of detriment to the distinctive character or the repute of the earlier trade mark may occur must be assessed by reference to average consumers of the goods or services for which that trade mark is registered (…). By contrast, the existence of the injury consisting of an unfair advantage being taken of the distinctive character or the repute of the earlier trade mark (…) must be assessed by reference to average consumers of the goods or services in respect of which registration of the later trade mark is sought (…)” (paragraph 92).